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[Retarius]

I took over 2 cases that were filed by another attorney in November 2006 - both cases pending.  The two cases are related inventions, and were filed on the same date in 2006.

Lets call them "case A" and "case B". Case A is currently under appeal to the BPAI - filed the reply brief about 3 months ago so probably some time until it gets reviewed.

Case B I received a first office action on November 5th of this year. In the office action, the examiner rejected all claims (properly) under 101 for statutory type double patenting. First time I've ever received one of those, and quite surprised.  The Examiner said the claims for case B were the same as the published claims for case A. When I looked at the as-filed applications that was clearly not the case - the claimed inventions were very distinct and different.

However, when I looked at the filed claims for case B, they were identical to the published claims for case A!!!! Furthermore, the filed claims for case A are identical to the published claims for case B. It appears the office of data management mixed up the two applications when they were published!

I sent a note to the office of data management requesting how to get the publication corrected.  They referred me to the procedure that states the publication must be corrected (for PTO error) within 2 months of the date of publication.  The only problem is the date of publication was in 2007 - long ago.

Does anyone have any idea on how to fix this? The Examiner referred me to the ODM to get it corrected, and their procedure doesn't provide a remedy here. Guessing there may possibly be no remedy if the publication can't be corrected at this point...

Thanks,
Retarius

[Retarius]

Just found the right person at the PTO. Informed me I can request voluntary republication for the two applications. Costs $430 per, but at least a way to remedy that.

Retarius

[DogDayPM 9er9er9er]

Hi Tom,

Do you really care if the two cases are properly republished?  I guess republication even at this late date might be important if you expect to be able to send an infringer a copy to set yourself up for intervening rights... ...but I'd guess you don't have any infringers ID'd given the error wasn't noticed for over 2 years.

If you don't actually need repub for other reasons, then you just need to convince the examiner of the mix-up, and I don't think you need republication of the apps to do that.

These things have happened before.  I had an acquaintance who was surprised by a perfect - too perfect - 102 rejection.  On investigation, he found his own spec had been published early under another number, as in your case(s), and an inspection of the PAIR files proved this out.

[Retarius]

If you don't actually need repub for other reasons, then you just need to convince the examiner of the mix-up, and I don't think you need republication of the apps to do that.

Therein lies the rub. The examiner and his SPE both maintain that I need to get the application republished in order to get rid of the 101 rejection. It does seem unnecessary to me, but they both were being sticklers with the law and rules here. They indicated it was MY problem since I (the previous attorney, technically) had the opportunity to amend the publication within 2 months for fault of the office. Some examiners.....

Retarius (Tom)

[khazzah]

In the office action, the examiner rejected all claims (properly) under 101 for statutory type double patenting. The Examiner said the claims for case B were the same as the published claims for case A.

That's a *proper* DP rejection? I'll take your word for it for now -- don't have any time to look it up -- but that seems strange to me.

I say that because the purpose of a Statutory DP rejection is to prevent two issued patents from having the same claims. What's that got to do with an issued patent (case B when it issues) getting the same claims as a published app (case A as published) ?

[Isaac]

Therein lies the rub. The examiner and his SPE both maintain that I need to get the application republished in order to get rid of the 101 rejection.

b
That's rubbish.  Even if the applications initially had the same claims completely due to your mistake, amending one of the applications during prosecution is enough to fix things.  What does republication accomplish?

Edit...

Even if prosecution is not opened on the other application, it seems to me that filing a preliminary amendment would eliminate the DP rejection.